Ex Parte Vincze et alDownload PDFPatent Trial and Appeal BoardMay 16, 201711812598 (P.T.A.B. May. 16, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/812,598 06/20/2007 Albert M. Vincze MLP 7549.2 2463 321 7590 05/18/2017 SFNNTOFR POWFR N T T P EXAMINER 100 NORTH BROADWAY ESSEX, STEPHAN J 17TH FLOOR ST LOUIS, MO 63102 ART UNIT PAPER NUMBER 1727 NOTIFICATION DATE DELIVERY MODE 05/18/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): uspatents @ senniger.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALBERT M. VINCZE, DOUGLAS G. CLARK, VICTOR NASRI SALEH, MALCOM JOHN DEWAR, and ROBERT W. FRITTS Appeal 2016-003633 Application 11/812,598 Technology Center 1700 Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of our Decision mailed February 27, 2017 (“Dec.”), affirming the Examiner’s rejections of claims 1—15, 19—31, and 33 under 35 U.S.C. § 103(a). Request for Rehearing filed April 27, 2017 (“Req. Reh.”), 1. We deny Appellants’ request to modify the outcome of our Decision for the following reasons. Appellants argue that our Decision does not provide them “any rebuttal” to the assertion in their Appeal Brief that Brennan’s disclosure of varying paddles from all flat paddles to all helical paddles is so broad that it encompasses an excessive and nearly infinite number of possible distinct Appeal 2016-003633 Application 11/812,598 combinations for the paddles, and does not suggest which possible combination of flat and helical paddles might be successful for producing battery paste suited for use in battery plates. Reh. Req. 3^4. Appellants argue that “a person having skill in the art would have to try each of numerous possible choices (i.e., every possible combination of paddles), and Brennan gives no direction as to which is likely to be successful.” Reh. Req. 4. Appellants contend that our Decision ignores this argument and simply states “a reason for which the [proposed] modification would be made.” Appellants assert that their argument “is in fact a response to the Board’s stated reason for the modification because [the Board’s] stated reason is merely a restatement of the position previously stated by the Examiner.” Reh. Req. 4—5. However, as our Decision indicates, Kwok discloses a method for continuously producing paste for lead acid batteries using a continuous screw extruder, and Kwok discloses that the residence time (retention time) of raw materials and resulting end product in the screw extruder varies depending on rates of reaction and crystallization. Dec. 4; Kwok col. 2,11. 42-43; col. 10,11. 5—9. Our Decision also indicates that Brennan discloses a continuous mixer comprising interengaging or mating paddles in which certain of the paddles are twisted on a helix to impart a forward conveying movement to material through a barrel in the mixer, while other mating paddles are straight and function primarily to mix material in the barrel. Dec. 5; Brennan col. 2,11. 17—19; col. 3,11. 38, 50-63. Our Decision further indicates that Brennan discloses that all straight paddles are utilized when a very high retention time is required in the barrel, and all helical paddles are used when a very low retention time is required. Dec. 5; Brennan col. 5,11. 2 Appeal 2016-003633 Application 11/812,598 49—52. Our Decision also indicates that Brennan discloses that the relative number of straight and helical paddles and their arrangement can be varied to suit different requirements for mixing, blending, shearing, and retention time, thus establishing that the ratio of mixing to conveying paddles is a result-effective variable. Dec. 5; Brennan col. 5,11. 52—55. We concluded in our Decision—citing In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) and In re Boesch, 617 F.2d 272, 276 (CCPA 1980)—that the weight of the evidence supports the Examiner’s conclusion that one of ordinary skill in the art reasonably would have been led to determine the relative number of straight and helical paddles to use in the continuous mixing apparatus of Kwok modified to include the paddle mixer arrangement disclosed in Brennan (as proposed by the Examiner), to achieve a desired retention time based on particular rates of reaction and crystallization, such as the ratio recited in claim 1, and would have had sufficient skill to do so. Dec. 7—8. Accordingly, rather than ignoring Appellants’ arguments as Appellants now assert, our Decision directly addresses their arguments by applying the controlling legal framework to the factual situation presented in this appeal. Id. As our Decision indicates, because Brennen establishes that the ratio of mixing to conveying paddles in a continuous mixing apparatus is a result- effective variable, discovery of the optimum ratio of mixing to conveying paddles to utilize in Kwok’s modified continuous mixer to achieve a desired retention time during production of paste for lead acid batteries would have involved nothing more than routine experimentation that was well within the level of ordinary skill in the art. Dec. 7—8; Applied Materials 692 F.3d at 1297; Boesch, 617 F.2d at 276. Although one of ordinary skill in the art 3 Appeal 2016-003633 Application 11/812,598 may have had to engage in experimentation requiring significant time and care to determine the optimum ratio, controlling legal precedent establishes that such experimentation would nevertheless have been considered non- inventive, routine experimentation that was well within the level of ordinary skill in the art. Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804, 809 (Fed. Cir. 1989) (combination diuretic was not patentable where both components were known in the art and a proper dosage ratio was determined by experimentation “requiring time and care” that was nevertheless within the level of ordinary skill in the art and produced predictable results.). Accordingly, despite the asserted breadth of Brennan’s disclosure that the relative number of straight and helical paddles and their arrangement can be varied to suit different requirements for mixing, blending, shearing, and retention time, and despite any lack of guidance in Brennan regarding particular ratios suitable for production of battery paste (Reh. Req. 3—4), the experimentation required to achieve an optimum ratio of mixing to conveying paddles for production of battery paste would have nevertheless been well within the level of ordinary skill in the art, and a resulting suitable ratio achieved through such experimentation—such as the ratio recited in claim 1—would therefore not impart patentability to a method for continuously producing battery paste absent a showing of the criticality of the ratio. Applied Materials 692 F.3d at 1297; Boesch, 617 F.2d at 276; Merck, 874 F.2d at 809; In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (indicating that in cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the 4 Appeal 2016-003633 Application 11/812,598 prior art range.). Appellants’ argument that one of ordinary skill in the art would have had to try every possible combination of paddles to arrive at the optimum ratio does not take into consideration the level of ordinary skill in the art. Reh. Req. 4. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). As our Decision indicates, Appellants have not demonstrated that the ratio of mixing paddles to conveying paddles recited in claim 1 imparts results that would have been unexpected by one of ordinary skill in the art at the time of the invention relative to the closest prior art, and Appellants accordingly do not establish the criticality of the recite ratio. Dec. 8—9. Woodruff, 919 F.2d at 1578. Accordingly, contrary to Appellants’ assertions, our Decision indicates that although we considered and addressed Appellants’ arguments and relied-upon evidence, we concluded that the weight of the evidence relied-upon in this appeal supports the Examiner’s conclusion that the ratio of mixing to conveying paddles recited in claim 1 would have been obvious to one of ordinary skill in the art at the time of Appellants’ invention within the meaning of 35 U.S.C. § 103(a). Dec. 3—10. CONCLUSION In conclusion, based on the foregoing, we grant Appellants’ Request for Rehearing to the extent that we have reconsidered our Decision, but we deny Appellants’ request to modify the outcome thereof. 5 Appeal 2016-003633 Application 11/812,598 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). DENIED 6 Copy with citationCopy as parenthetical citation